BPAI Shuts Down Dissent in Favor of Efficiency

The Board of Patent Appeals (BPAI or Board) is very much a quasi-judicial body. The emphasis for today is on quasi. 35 USC §6 calls for each appeal to be heard by at least a three judge panel. Yet, the Board appears to be taking steps to limit the effectiveness of those panels. These changes are apparently motivated by a need for efficiency in the face of budget shortfalls and increased appeals.

Like examiners, BPAI judges have a count system. BPAI Judges are expected to sit on about 300 panels per year and draft about 100 opinions. In the past, judges would receive credit for drafting full dissents and concurring opinions. That has changed. In an internal email, BPAI Vice-Chief Jay Moore has indicated that these extraneous opinions will no longer ordinarily garner any credit. According to Vice-Chief Judge Moore, "[c]oncurrences, dissents, and remands are not normally efficient mechanisms for securing the 'just, speedy, and inexpensive' resolution of an appeal before the Board." The e-mail is reproduced below:

Please note that, effective immediately, if you would like a dissent, concurrence, or remand to be considered towards your productivity totals, you must submit a request. The form is attached, and may be used retroactively for cases prior to this date. For cases after this date, it must be submitted to your Vice Chief Judge within one week of mailing of the dissent, concurrence, or remand in order to be considered.

Concurrences, dissents, and remands are not normally efficient mechanisms for securing the “just, speedy, and inexpensive” resolution of an appeal before the Board. (Bd. R. 1). As indicated in the PAPs, a productivity credit is not automatically earned for a concurring opinion, dissenting opinion, or remand. Accordingly, justification is required to explain the need to undertake the extra work and occasion the extra delay in order to ensure efficient and proper utilization of our resources. Further, any credit given for a concurring opinion, dissenting opinion, or remand will be commensurate in scope with the justification provided and the scope of the extra work.

Please see Al or Jay if you have any questions.

Thanks,

Jay Moore Allen MacDonald

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The push for efficiency at the BPAI is also seen in the non-judge "patent attorney" program. Many of the BPAI opinions are now ghost written by newly minted patent attorneys and then signed by the BPAI judges. The real problem with this program is that when the patent attorneys are used, the BPAI judge is given a much higher throughput quota.

According to an anonymous observer - "the time constraints [under the Patent Attorney program] are so serious that for many cases, not a single one of the judges signing off on a decision will have read the underlying papers detailing the facts of the case." This observer asked to remain anonymous based on "the intolerance of dissent at the Board."

This need for efficiency is also the driver behind the still-pending BPAI appeal rule changes.

96 thoughts on “BPAI Shuts Down Dissent in Favor of Efficiency”

Europe is changing. Wait until Sharia law is officially enacted in France. Turks still abound in Denmark, although they tried to pay them to leave. The Muslims are rising again in the Balkans. And Spain…

Wait until Max’s precious general “civil law” is supplanted by religious law.

Max is a simpleton. That’s why common law nations beat the crap out of, and bailed out, civil law nations. That’s why centralized command and control don’t work. Get a life Max. You are simple, boring, and tedious.

So, Bother and Muck Pit, let me sum up (with my ever-present dash of hyperbole, just to keep the fun running). Under civil law, the Exr dons the mantle of the PHOSITA and makes the challenge, that the claim embraces something that is “obvious”. Obvious under the strict step-wise PSA analysis, that is. The mutual exclusivity you divine (between Examiner assertion and proper PSA) just isn’t there. Your beef is actually with the world’s default legal system, civil law (as opposed to English common law). You might as well get used to it because ROW isn’t going to switch to common law much before doomsday.

Meanwhile, back at the EPO, sophisticated Applicants relish such objections. Then they can build a file wrapper and a set of issued claims that are resistant to validity attacks after grant. Given the presence of a patentable invention, overcoming the objection is a piece of piss. If it ain’t so for you, draft better or get better EPO counsel.

Could it be, readers, that the lady “doth protest too much”: that the EPO Exr has a good solid common sense point, and Don’t Bother don’t know any way to deal with it, except by shouting “Where’s your proof?”

I’m sure I don’t need to remind readers about the lack of deference national courts show to the EPO, and that a mere preponderance of evidence is needed, to kill a claim issued by the EPO. A solid record of objections made and overcome will be an asset later on. Kiss that EPO Examiner who works hard on the case, and exercises his/her imagination fully. Say to the Exr “I’m glad you asked me that question madam”.

It never ceases to amaze me, that the ones quickest to accuse others of prejudice are the ones who suffer from it in the highest degree.

“Your belief that every EP examiner is rigorously applying PSA, and is not influenced by the age old personal bias of many examiners that ‘it’s obvious because I say it is’ suggests to me that you’re either incredibly naive or just plain dumb.”

BTW, I’m well aware how PSA works. I’m also well aware how the determination of obviousness under Graham works. But that doesn’t mean the examiners do. Or if they do, it doesn’t mean they actually follow it. Your belief that every EP examiner is rigorously applying PSA, and is not influenced by the age old personal bias of many examiners that “it’s obvious because I say it is” suggests to me that you’re either incredibly naive or just plain dumb. Or both. Whatever.

Brother, I’m curious. What’s all this “mere assertion” you find in a “typical” 103 EPO Office Action? Can you give me an example? Have you ever heard of the landmark Agrevo Decision that explains how the 20 year old (and by now unassailable and rigorous) Problem and Solution Approach works? (Cue for JAOI to jump in and tell us how it’s fatally flawed)

The examiner can attempt to rely on the theory of inherency. That requires a basis in fact and/or technical reasoning. In your example, if the prior art were disclosed as being made the same way as the claimed invention, but didn’t mention the fancy ratio, that would be sufficient to rely upon inherency.

I was thinking more along the lines of the typical nonsense I get from EP examiners. They acknowledge that none of their prior art shows a particular feature (e.g. an actual honest to goodness structural element), or relationship between elements, but just “merely assert” that it would have been obvious.

I’ll bother, to try again. I mean trivial like (to take just one example) a claim characterized by some fancy material property parameter that nobody else in history has ever bothered to measure but which, if you were to take the trouble to measure it (you know, in some hugely expensive programme of experimentation, on some expensive, exotic test equipment), would turn out to have also been present in the prior art material. Maybe like some fancy ratio of pore distribution/size/density/spread/shape parameter when claiming a foamed polymer material, that you say makes (surprisinglyly, nudge nudge, wink wink) a tougher porous material. It really would take a super Examiner (your word) to come up with substantial evidence of lack of novelty to blow away that sort of claim. What then is your control mechanism, Blower/Blather, to stop such junk getting through to issue?

muckpit: “You might laugh, but I’ve seen stuff like this. One of my favorites happened to an attorney I know. The Examiner relied upon a particular periodic table in asserting that a particular material had a particular characteristic. As it turns out, if you read the whole NPL reference, it stated that this periodic table was what people thought in the 1800s and is incorrect for varous reasons. This attorney had to go to the BPAI to disabuse the Examiner of this finding of fact.”

What is the application number? I’d like to see exchange on PAIR and see how it actually went down. Otherwise, I’ll just be forced to ignore it as a worthless anecdote.

More new stuff. I had no idea that anybody dignified, with the description “finding of fact”, a mere assertion from a PTO Examiner. For Examiners in the civil law EPO, it is required of them that, even without any supporting evidence, they contend that a particular method step or apparatus feature, as such, would have been “routine” for the PHOSITA at the time. How else are they to prevent trivial stuff getting to issue? But then it’s up to the Applicant to destroy that postulation, by filing a knock-down counter-argument, substantial evidence, or whatever. Nobody in Europe would talk of any fact having been “found”, at least, not until Applicant has failed to neutralise the mere assertion by the Examiner.

“I confess, I was also thinking that fact-finding under common law is inherently much more expensive than fact-finding at the EPO, but the age of the US Patent Statute is of course irrelevant to that issue.”

Fact finding at the USPTO is cheap, simple, and often-times wrong. An examiner can make a finding that the moon appears to be full of holes, swiss cheese is full of holes, therefore the moon is made of swiss cheese.

You might laugh, but I’ve seen stuff like this. One of my favorites happened to an attorney I know. The Examiner relied upon a particular periodic table in asserting that a particular material had a particular characteristic. As it turns out, if you read the whole NPL reference, it stated that this periodic table was what people thought in the 1800s and is incorrect for varous reasons. This attorney had to go to the BPAI to disabuse the Examiner of this finding of fact.

Findings of fact at the USPTO are no more than the Examiner thinking that anything he or she asserts is a finding of fact. Whether or not that finding is based upon substantial evidence (a concept most examiners ignore) is an entirely diferent story altogether.

I’m obliged, Muck Pit. You just taught me something useful. Mission accomplished. I must say, though, that one difficulty I had in mind is establishing under US law just exactly what is, as a fact, the “state of the art” on which 102 and 103 legal issues fall to be determined. But you’re right, I have no personal experience of going to the BPAI. I rely on folks like you to tell me about it. And I confess, I was also thinking that fact-finding under common law is inherently much more expensive than fact-finding at the EPO, but the age of the US Patent Statute is of course irrelevant to that issue.

“Curious suggests doubling the number of judges. My counter-suggestion would be to halve the number of legal issues in each case.

You do it, like Europe did in 1973, by throwing out 200 years of accumulated legal obfuscation and replacing it with a new slimline Statute that is confined to the irreducible minimum of legal provisions needed for a fully functional patent system.”

Max — do you really think before you write or does whatever random synapses are firing inform your fingers as you type?

Most appears are decided on mundane issues such as 102, 103, and claim construction, e.g., did reference A teach feature X, etc. These are exactly the same issues that are present at the EPO.

Despite what you think, the vast majority of appeals at the BPAI do not turn on some obscure point of law. If you understood how the BPAI is supposed to review the Appeal and how the obscure point of law would likely be introduced, you would know this. Instead, you run your mouth on something you obviously know nothing about.

Curious suggests doubling the number of judges. My counter-suggestion would be to halve the number of legal issues in each case.

You do it, like Europe did in 1973, by throwing out 200 years of accumulated legal obfuscation and replacing it with a new slimline Statute that is confined to the irreducible minimum of legal provisions needed for a fully functional patent system.

Mind you, I do see the difficulty to summon up the sinews to make a step change. Unlike elsewhere in Europe, on the common law British Islands they continue to drive on the left side of the road. That will never ever change.

I don’t want to fall out with the Mouse and his 20 years of experience with Appeal Board cases at the EPO, and I readily agree with him that all EPO tribunal members know the applicable law in detail, and the instant file in detail. What I wrote was “full detail”. What the Mouse wrote back was “great” detail, which I am tempted to classify as a “weasel” wriggle. Is the Mouse’s hidey hole inside the EPO building perhaps? I continue to assert that only the Case Manager (called the “Rapporteur” or the “First Examiner”) knows the file in “full” detail. Good so. No other way better combines optimal business efficiency with optimal civil law fact-finding.

The BPAI received 1623 new Ex parte Appeals, and they disposed of 516. The current backlog now stands at a whopping 10822. At the current rate, an Appeal docketed today won’t get “disposed” for 2 years. File your Notice of Appeal today, June 10, 2008, and given the time it takes to prepare the Appeal Brief, receive the Examiner’s Answer, file the Reply Brief, get the Reply Brief noted, and finally get your Appel Brief docketed, you could be looking at getting a Decision on Appeal sometime in 2013.

According to my 20 years EPO appeal board experience generally all three (or five) appeal board members know both the file and relevant law to be applied in great detail.
Of course their production is not comparable to that of the BPAI judges but the time efforts involved for the preparation and the detailed written decision in each case explain why.
I can’t see why such a European model based on a desire for an affordable system based on quality together with a reasonable output is irritating (@ Posted by: American Cowboy | May 22, 2009 at 09:55 AM).

If ever I get the chance to get my round of drinks in, I will be right there Cowboy, JAOI, and maybe a full measure of beer will dilute the level of irritation felt. There is much that is questionable about the patent system in Europe that we can argue about if you want. For example, has employee-inventor statutory compensation for invention done anything for technological progress in the German auto industry. My point is that adopting legal nuggets from another jurisdiction doesn’t always make things worse. It depends which nuggets you borrow. See how much we in Europe have borrowed from the USA, over the years, on anti-trust law. I just happen to think that much within the EPC and the EPO is benchmark stuff, from which other jurisdictions could benefit, without their losing any of the progress-promoting effects of any half-decent patent system.

And I hope to find some time tomorrow to explain why “a good independent source of information” i.e., CISCO’s now-defunct troll tracker blog, defrauded its readership by presenting only one half of the argument — there are two sides to every story and in order to be objective, independent, both sides must be presented equally, and when that’s not done despite the claim to be “objective, independent” it is fraud, plain and simple

You said “it’s of secondary importance who’s world champion in technological progress…”

I disagree with my good friend Max that one. The point of the patent system (in the US anyway) is to encourage technological progress. If US tech progress exceeds that of other nation, it is an indicator of the effectiveness of the US patent system. You are free to disagree that US tech progress excels, if you want; I realize that is debatable. But to my mind, progress and the patent system are inexorably linked and what I see as the historic US tech lead indicates that historically the US patent system works well. (That is NOT an endorsement of the current state of the USTPTO.)

“Max, I am not saying America is superior in every way, but in the field of technological advancement aided by the patent system, everybody else is number two or higher.”

Cowboy, I think you make my point. When I (patent practitioner in Europe) wrote “every way” it was in the context of this patent law blog, where it’s of secondary importance who’s world champion in technological progress or, say, cricket, soccer, Rugby Union, field hockey, curling, or handball. This is a patent law blog, right, not a technology or sports blog.

Jen, I’m not saying that every American patent practitioner thinks America superior in every patent law way. Just some of them.

But, hey, Robert KS makes a good point. Let’s all of us resolve henceforth be more courteous to each other out on this blog, shall we?

I’d like to point out that in “normal” courts (i.e., not in quasi-judicial settings), judges are not permitted to have a pecuniary interest in the outcome of the case. (That’s why you hear about SCOTUS judges recusing themselves when they own stock in one of the companies whose case they’re hearing, etc.)

In this circumstance, an ALJ stands to benefit from deciding a case one way or the other. That would never fly in an Article III or state court. And the rationale for not allowing this kind of thing to happen in “real” courts is, from a policy standpoint, absolutely applicable here. Ridiculous. Borderline shocking.

As an side: What’s the deal above w/ people complaining about dissenting opinions? A judge should issue a dissent when they believe that, based on the law and the facts, they are correct and the majority is wrong. There a number of instances in the law where a dissenting view has ended up becoming, over time, the majority view. It’s how the law is made.

There’s too much unnecessary hostility in this thread. Some rules governing respectfulness of conduct ought to be applied to comments. This is a blog read by professionals and there is no reason for professionals be to calling each other names.

Dennis, I believe this issue was raised first on Patnews. Parts of it appear to be verbatim. Shouldn’t Greg have been cited?

Here’s what I sent Greg, appropriately edited to get past your puritanical gatekeeper:

“As far as the Moore Email, it is pure PTO. Do you see the nuance? The APJ files the request for credit AFTER the dissent is filed. This means that he/she doesn’t know before putting the time into writing the dissent whether he/she will get credit, which, naturally, discourages them from going to the trouble.

So what’s new???? This crrap comes up all the time. The examiner scrrews up and you either file a petition on your client’s dime to try and sort the mess out or you waive any right to raise it later, and all the while the original clock is running so you have to go ahead and reply to the mooronic office action or examiner’s answer or whatever not knowing whether the petition will succeed. If it does, you’ve wasted your time and your client’s money in responding because the examiner will re-file and you’ll have to answer again.

Absolutely pure, unadulterated PTO. So why isn’t this anonymous APJ bittching about the way the PTO uses the same tactics to scrrew applicants BEFORE they get to the appeal? ”

I tend to concur with Pope’s distaste for concurring opinions, but I absolutely dissent from his dissing dissents. I particularly find USSCt concurring opinions to be a huge waste of everybody’s time and nothing but an ego-stroker for the author, usually Scalia. But dissents are the life-blood of any appellate system, even Scalia’s.

I don’t see how muck pit’s BPAI disposal numbers tell us anything useful. You’ve got shifting lag-times and a maxed-out system. It’s like a 0-order reaction, the amount of product per unit time reaches a max and the precursor builds up.

The relevant numbers are the appeals filed. As Dudas went on a rejection-jihad, surely appeals filed numbers went up. Mine certainly did. That’s why BPAI wrote the draconian new appeals rules and is trying to cut the quality of it’s decisions by banning dissents. Action — reaction.

“2. It “really” irritates my socks off, when Americans keep going on about how America is so superior (in every way) to everybody else on this planet.”

Actually, I’ve never seen anyone say or imply that here (admittedly I don’t read all of the comments). On the contrary, most people here seem to feel the USPTO has major problems. And every patent attorney I know thinks the EP does better PCT searches.

“the examiner is thinking to himself — “well, I got to be right because my SPE is approving my office actions.” Also, the more times they make the mistake, the greater their belief that they’ve got it right.”

Nobody thinks the first part you jacarse. The second part however is in fact true, and examiners believe that because it is true. The more times you make a “mistake” the less it matters if it was a mistake, and in essence they did “get it right” in so far as they moved the case (which is a major part of our job fyi). Particularly this holds as long as RCE’s flow in in the cases involved. This is just a job to many examiners, the legalities are of secondary concern to getting home for dinner. Thus, all is apparently as it should be. You don’t see cops trying to understand the jurisprudence of the laws they’re applying do you? The more people who prepay their tickets the more the cops believe they got it right no doubt. At least in so far as they “did their job” to raise capital for the city.

And while I will admit that understanding a bit more of the law makes it easier in my day to day, there was a high cost of entry. Very high. And if I want to go the whole law school route it’ll be even higher. There is no reason to attempt to foist those high costs on examiners.

“Yeah, we get it {BLEEP}, there’s a backlog at the Board. But even with the backlog, if NO ONE is reading ANY part of the file, then decisions should still be coming quicker than they are.”

No one said that “NO ONE is reading ANY part of the file.” Try to keep up with what is being stated.

What was stated is that “[m]any of the BPAI opinions are now ghost written by newly minted patent attorneys and then signed by the BPAI judges.”

The number of decisions that will be issued is directly tied to how many “productivity credits” are required for a particular APJ over a certain period of time and how many APJs there are. Falling back on their “experience as an examiner,” a smart APJ will obtain enough productivity credits to get a high rating and nothing more. Nothing against them if they do so — it is the system they work within.

“First, let’s consider the source here – an ‘anonymous observer’ – without more information about who this person is, I’d say their credibility is a little suspect. For myself, I am a PTO insider but not on the Board, don’t personally know anyone on the Board, or have any first-hand knowledge of how cases are decided there.”

Please, do let us consider the source, i.e. you. Anonymous by screen name. With an admitted lack of knowledge of anyone or anything about the Board.

I should hasten to add, the analogy I gave is imperfect, because the Fed. Cir. is not a cert court. However, I still think dissents at the BPAI level tend to focus the most important issues and to help subsequent appeals by weeding out extraneous issues.

Aside, I clerked for a judge who had a withering view of dissents and concurrences. Although he wrote them from time to time, when it came to analyzing the SCOTUS, he regarded them as a waste of his time. Respectfully I disagree with that view.

1. I’m proud of EPC/EPO, a little bit of European co-operation and shared culture (even if I’m not very proud of a lot of other stuff in Europe) and

2. It “really” irritates my socks off, when Americans keep going on about how America is so superior (in every way) to everybody else on this planet.

You can realate to both of those, eh Cowboy?

And, thanks, Smash, for the reason you give. Actually, I had thought another was more important. In common law Binding Precedent, the identity of each individual judge is a key brick in the legal edifice. Not so in (more socialist??) civil law jurisdictions where consensus is more important.

“I’d think that an APJ – even one that’s a former examiner – has a little more experience at ‘practicing law’ to render a legal opinion than a second-year law student.”

You are working with a wrong assumption, an examiner isn’t practicing law. I would never rely upon an examiner to read the case law and give me a reasoned opinion as to whether or not the case law applied to the particular facts at issue. I would say the same about a patent agent. Sure, there are a lot of things they can do, but practicing law is not one of them. Examiners are given formulas, e.g., find feature x, find feature y, state that it would have been obvious to combine feature x with feature y for the advantage inherent with y. I could train anybody to make that type of rejection in about 2 hours. However, understanding 103 jurisprudence is another thing altogether.

Also, another difference between you (ghost writing for the judge) and examiners is that your work product likely received substantive review from someone who has an idea as to the law. I’ve seen the work product of examiners, and I know that most primaries/SPEs just rubber stamp the office actions.

When you made a mistake, the Federal Judge picked up on it, told you about it, and you never made it again. An examiner, however, can make the same mistake a dozen of times, and although the examiner may be wrong (and told so by the practitioners) so long as the SPE is rubber stamping the office actions, the examiner is thinking to himself — “well, I got to be right because my SPE is approving my office actions.” Also, the more times they make the mistake, the greater their belief that they’ve got it right.

MaxDrei does it again: holds up the EPC and EPO as the highest and best evolution of patents in the history of the world. While I am open minded and like to hear of other approached to solving problems, his constant insistence on the perfection of the European model is really irritating.

In March, the BPAI disposed of 824 cases. Going back ten years, the next highest monthly total for cases disposed is in the low seven hundreds (this was probaby 8 years ago).

However, despite March being a “record” month for the BPAI, their backlog still went up 557 because they received 1381 cases in March.

Some of the numbers are likely due to the threat of the new BPAI rules. However, if so, it means that the bulk of those new appeals haven’t even begun to hit the BPAI’s docket. The rules were to go into effect in Dec. of 08. Take (at least) 3 months before the examiner to issue an examiner’s answer and another 2 months for the reply brief. It takes another 1-2 months before the reply brief is noted, and all this means is that the numbers of new cases being received by the BPAI will skyrocket over the next few months.

The APJs at the BPAI are going to have to draw from their examiner experiences in order to be able to make their quotas.

Having worked as a law clerk for both a state intermediate appellate court and the state supreme court, I can tell you flat out that one of the criteria the high court uses in deciding whether to grant cert is whether there is a dissent below. Supreme courts have a big docket of cert petitions and not a lot of time to read them closely. Besides, dissents generally are not all that common at the lower tiers of appellate systems, so what’s the harm in them when they have benefits?

“As for your tax attorneys at the IRS analogy, there is a difference between a tax attorney and an auditor. You would expect a tax attorney to make an independent judgment as to what law is based upon a particular set of facts. You wouldn’t expect the same from an auditor. Anyway, you need a better analogy because yours sucks.”

So please explain how an IRS tax attorney without any work experience outside the agency is “practicing law,” because according to you examiners with J.D.’s don’t have this experience either right? Besides, as I’ve mentioned, I wrote opinions for a federal district court judge as a 2L law student, so what’s your point? I’d think that an APJ – even one that’s a former examiner – has a little more experience at “practicing law” to render a legal opinion than a second-year law student.

“So if it’s taking them longer to get decisions out, but no one is reading the file (according to ‘anonymous observer’), then what’s taking them so long?”

Seriously … you want an answer to that?

All you had to do was read my first post. The answer is simply —> 9714

Don’t know what 9714 is? It is the current backlog at the BPAI. My guess is that after May’s numbers are posted, that number should easily climb to over 10,000. A year ago, that number was 3,120. The year before that, it was 2,071. A year before that, it was 1,253. A year before that, it was 752 (about 3 months worth of disposals). An appeal that is docketed today likely won’t get considered for at least 2 years.

…. and you wonder “what’s taking them so long?”

Thanks for putting a smile on my face this morning. That question was precious.

“A problem being inferred to by the “anonymous observer” that “not a single one of the judges signing off on a decision will have read the underlying papers detailing the facts of the case” is particularly disturbing. It infers that not only is the APJ assigned to write the decision not reading the filings (e.g., appeal brief, reply brief, examiner’s answer), the other two APJs signing off aren’t required to either.

Perhaps “anon” or somebody with knowledge can enlighten us on this practice.”

First, let’s consider the source here – an “anonymous observer” – without more information about who this person is, I’d say their credibility is a little suspect. For myself, I am a PTO insider but not on the Board, don’t personally know anyone on the Board, or have any first-hand knowledge of how cases are decided there. That said, you’d have to think that if what “anonymous observer” said were true, then we wouldn’t expect to see an increase in time between docketing date and date of decision. However, I think that’s exactly what’s happening now – i.e. an INCREASE in time between docketing and decision. So if it’s taking them longer to get decisions out, but no one is reading the file (according to “anonymous observer”), then what’s taking them so long?

“Probably. But if there were a reversal, wouldn’t it be remanded? Under this new policy, how are reversals treated without remand? Also, under today’s practice, could you please provide an example or two when a case would be remanded without a vacate or reverse action?”

I’ve seen “administrative ‘remands'” (i.e. by an LIE at the Board) for such things as the examiner not initialing a single reference on a 10-page IDS, or some other “technicality” with appellant’s Appeal Brief or the Examiner’s Answer. I’ve also seen “remands” from the Board itself for such things as having the examiner go on the record with his/her specific construction of a disputed claim term when such was not apparent from the file history. I’ve also seen remands from the Board in cases where the examiner did not file a “supplementary” Examiner’s Answer after appellant’s Reply Brief and the Board thought that one was necessary to address “new” arguments raised by appellant in the Reply Brief. I think it’s these situations (except for the “administrative” remands) that the Board is now seeking to avoid. You’re correct in that a reversal is sort of an “implied” remand, but it’s always just called a “reversal,” you never see a Board decision delivered as “reversed and remanded,” but only “reversed,” “affirmed-in-part,” etc. In that case, I guess you could even think of affirmances as “implied” remands, since pretty much every ruling made by the Board, be it affirmance or reversal, gets sent back to the examiner for further action following the appeal.

“I venture to suggest that this management move is yet another that is inspired by observation of case management at the EPO, where dissent judgements are unknown.”

Max — your reading comprehension is awful. Management’s move has nothing to do with “observation of case management at the EPO.” Instead, it has everything to do with USPTO management wanting the BPAI to pump out more decisions. If a judge is getting a count on a dissent, there are two counts being given out on a particular decision. Two counts for one decision is inefficient – per the USPTO head honchos.

The reason why there is multiple judge panels is that reasonable people can disagree over the same set of facts. However, if each judge independently weighs the evidence and presents his or her own “judgment” (note the similarity of the word “judgment” to “judge”), the assumption is that the majority decision will be the correct decision despite dissenting opinions.

A problem being inferred to by the “anonymous observer” that “not a single one of the judges signing off on a decision will have read the underlying papers detailing the facts of the case” is particularly disturbing. It infers that not only is the APJ assigned to write the decision not reading the filings (e.g., appeal brief, reply brief, examiner’s answer), the other two APJs signing off aren’t required to either.

Perhaps “anon” or somebody with knowledge can enlighten us on this practice. Specifically, are all the APJs required to read the filings? and in actual practice, do all the APJs read all of the filings?

If they aren’t required or if they don’t, why do we have a 3 judge panel? The USPTO should just institute a 1 judge panel. If the other judges are not meaningfully involved in the decision, why have them? This should increase productivity even more.

“Actually, several of the BPAI judges have come from firms and have NEVER been an examiner. Besides, if they’re reviewing the work of examiners, I think it is of some value that they’ve actually had first-hand experience as an examiner. Then again, I guess all the tax attorneys over at the IRS aren’t really “practicing law” either.”

Why would experience being examiner be particularly relevant? The BPAI isn’t being asked to search the prior art — probably the most important job an examiner. First and foremost, the examiner is a finder of fact and, in essence, a paralegal being asked to review the application for certain technicalities. The BPAI, however, isn’t being asked to examine the application. Instead, they are being asked to determine whether the examiner set forth a proper prima facie rejection and to weigh evidence for and against patentability (i.e., weigh the facts and apply the law). This is far more closer to what a patent prosecutor does than what an examiner does.

However, what the BPAI should be doing isn’t what many of them do. Instead, I see the “former examiners” try to reexamine the application. I had one instance in which the BPAI disagreed with the examiner’s findings of fact and disagreed with the examiner’s obviousness analysis. The BPAI then proceeded to insert its own findings and analysis and assert that the application still should have been rejected. Finally, they had the gall to say that I didn’t “establish examiner error.” As I said in an earlier post, the BPAI making up facts as they go along is par for the course.

I guess I should feel lucky I got an obviousness analysis on that one. What I see a lot of recently is: (i) ignore the examiner’s prior obviousness analysis; (ii) reproduce some canned paragraph regarding KSR; (iii) conclude that the combination would have been obvious. There are many different types of rationale permitted when employing KSR, and all of these rationales require an articulation of several findings of fact. Has any of the decisions affirming the examiner on KSR grounds ever include these findings …. No … not even close.

Another problem I have with the BPAI is that they are introducing new grounds of rejection ALL THE TIME when they are “re-examining” the application. However, they aren’t designating these new grounds as such – likely because they are unfamiliar with law. So, instead of kicking the application back down to the examiner to make findings on these new grounds (and giving me a chance to present rebuttal evidence), they “affirm” the examiner but on grounds not raised by the examiner. Some of the classic lines I’ve seen are “appellants did not rebut XXXXX” where “XXXX” is some finding of the BPAI. The problem is that the “XXXX” finding wasn’t made by the examiner … it was made by the BPAI. It is hard for Appellants to rebut a finding that wasn’t part of the record until after the BPAI introduced it.

As for your tax attorneys at the IRS analogy, there is a difference between a tax attorney and an auditor. You would expect a tax attorney to make an independent judgment as to what law is based upon a particular set of facts. You wouldn’t expect the same from an auditor. Anyway, you need a better analogy because yours sucks.

Another “former examiner” characteristic that I see is their penchant to complete ignore arguments and or completely brush of a couple page of arguments with the statement “Appellants arguments are not persuasive.”

I’ve filed a few request for reconsiderations in my day, and the convoluted hoops I’ve seen the BPAI jump through, when faced with their own clear error, is amazing. They’ll mis-cite any piece of law to uphold their own decision. The worse analysis I’ve seen out of the BPAI accompanies their response to a request for rehearing. Again, I’m incredibly embarrassed at the work product coming out of the BPAI. I have hiring power at my firm, and there are few APJs I would hire after getting a closer look at their work product.

BTW – pointing out spelling errors is so five years ago. Only message board newbies complain about another’s spelling.

“Are you confusing “remands” with “reversals”? They’re not the same thing.”

Probably. But if there were a reversal, wouldn’t it be remanded? Under this new policy, how are reversals treated without remand? Also, under today’s practice, could you please provide an example or two when a case would be remanded without a vacate or reverse action?

Better yet, if the CAFC reversed and remanded a BPAI decision, wouldn’t that generate a remand to the examiner in some instances?

I venture to suggest that this management move is yet another that is inspired by observation of case management at the EPO, where dissent judgements are unknown.

As you all know, EVERY EPO Decision, positive to Applicant, or negative, carries three signatures, whether it be 3 Examiners or 3 Appeal Board Judges. Yet, only one of the panel of three knows the file in full detail. The system breeds collegiality and an esprit de corps at first instance. The totally independent second instance has no hesitation to disagree with the Examiners, and does so, fairly often.

The system is inherently expensive, but necessary for consistency, when the panel members are from any one of 35 Member States. It is neither the English system, where a single judge decides patent validity at the High Court in London, nor the German system where patent validity at first instance is decided by a 5 judge panel at the Federal Patents Court in Munich. All 5 judges read the case. Now that’s what I call expensive.

The EPO system nourishes consistency. The caselaw of the EPO is constantly evolving but without any swing of a pendulum. Practitioners can tell you, with a high level of confidence, what will work and what won’t.

The more complicated you make the practiuce of law, the more complexity you breed. Why allow dissent judgements below Supreme Court level, except to pander to the vanity of judges? Why have a Doctrine of Equivalents, except to give judges more freedom to waffle? The beauty of the European Patent Convention is that it contains the irreducible minimum of provisions needed in a patent statute. It emerged in 1973 on a plain white sheet of paper carrying no baggage of previous Statutes. You should stay with your present FtI Statute in all its magnificent obfuscation, or do what Europe did, that is, clear away the accumulated legal rubbish, and start afresh.

To my mind, the new Rules for the BPAI are a step in the right direction, but a step that will bring (assuming nothing else changes) only more wailing, gnashing of teeth and tearing of shirts.

I find this alarming. Squeezing examiners with a ridiculous count/workflow system, applicants with an onerous rule package, and now administrative judges with this. Hopefully the CAFC will respond if this results in bad BPAI decisions being appealed to them.

“This is what happens when you hire examiners that happen to get a law degree on the side. One should be required to actually practice patent law getting kicked up to the BPAI … and being an examiner does not constitute practicing patent law, as 6 proves day in and day out on this board.”

Yeah, and I wrote opinions for a federal district court judge as a 2L law student, so what’s your point?

I’m calling B.S. on this one, DC. If this were actually true, then we wouldn’t expect to see a dramatic increase in time between docketing and decision. If they’re supposedly “not reading” the “underlying papers” (whatever that means), then what’s taking them so damn long to get opinions out??

“One should be required to actually practice patent law getting kicked up to the BPAI … and being an examiner does not constitute practicing patent law.”

Actually, several of the BPAI judges have come from firms and have NEVER been an examiner. Besides, if they’re reviewing the work of examiners, I think it is of some value that they’ve actually had first-hand experience as an examiner. Then again, I guess all the tax attorneys over at the IRS aren’t really “practicing law” either.

–According to an anonymous observer – “the time constraints [under the Patent Attorney program] are so serious that for many cases, not a single one of the judges signing off on a decision will have read the underlying papers detailing the facts of the case.” —

Patent attorneys filing IDS’s are supposed to have read all of the cited references, but PTO officials signing papers need not have read the underlying papers???

“…not a single one of the [[judges]] SPE’s/primaries signing off on [[a decision]] Office Action will have read the underlying papers detailing the facts of the case.”

No difference really. The BPAI is simply adopting the examination model used by the corps as a model for reviewing decisions.

Nothing really shocking in this “development.” In the “quantity = quality” thinking that rules the PTO, this is merely a predictable application of a well known technique for its intended consequences that doesn’t produce any new or unexpected results. Completely obvious when you think about it.

–According to an anonymous observer – “the time constraints [under the Patent Attorney program] are so serious that for many cases, not a single one of the judges signing off on a decision will have read the underlying papers detailing the facts of the case.” —

1. A document creation and review method comprising:
providing a questionnaire to a do-it-yourself individual;
receiving the completed questionnaire with answers;
using the answers to completed questionnaire to create a first draft;
a trained professional reviewing the first draft and inserting comments;
the trained professional returning the first draft containing comments to the do-it-yourself individual.

“Many of the BPAI opinions are now ghost written by newly minted patent attorneys and then signed by the BPAI judges” and “for many cases, not a single one of the judges signing off on a decision will have read the underlying papers detailing the facts of the case.”

Which confirms for me that patentability is really determined by rock, paper, scissors.

There was a time when I expected a decent decision out of the BPAI. However, I’ve seen so many decisions that aren’t based upon the record, facts that are completely made up and/or completely wrong, and case law that is pitifully applied.

This is what happens when you hire examiners that happen to get a law degree on the side. One should be required to actually practice patent law getting kicked up to the BPAI … and being an examiner does not constitute practicing patent law, as 6 proves day in and day out on this board.

Combine the inexperience of many of the current APJs with people ghost-writing the decisions and you have the mess at the BPAI we currently have.

I hope many of those APJs never want to go into private practice. I would be embarressed to have my name associated with some of the decisions that I have seen come out of the BPAI. Unfortunately for them, their writing samples are out there for the world to see.